Ex Parte Hu et al

Patent Trial and Appeal Board

Nov 14, 2017

13289973 (P.T.A.B. Nov. 14, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/289,973 11/04/2011 Bo Hu 26295-18357 1041
87851 7590 11/16/2017
Faoehnnk/Fen wi ok
EXAMINER
Silicon Valley Center WHITAKER, ANDREW B
801 California Street
Mountain View, CA 94041 ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
11/16/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ptoc @ fenwick.com
fwfacebookpatents @ fenwick.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BO HU, KELLY WINTERS,
EVAN SHARP, and EMILY CLARK WHITE
Appeal 2016-008277
Application 13/289,973
Technology Center 3600
Before HUNG H. BUI, BETH Z. SHAW, and
AARON W. MOORE, Administrative Patent Judges.
MOORE, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-008277
Application 13/289,973
STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1—5, 8—17, and 24—31, which are all of the pending claims. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
THE INVENTION
The application is directed to “[sjocial networking systems [that]
allow users to track deals offered by deal providers.” (Abstract.) Claim 1,
reproduced below, exemplifies the subject matter on appeal:
1. A computer implemented method comprising:
accessing for a user of a social networking system a set of one
or more other users with whom the user has established a
connection in the social networking system;
receiving a request in the social networking system to follow
a deal from the user, the request comprising information
identifying the user and information identifying the deal;
receiving, in the social networking system, information
describing online interactions between users of the social
networking system and the deal, the online interactions
performed by the users using a user interface of the social
networking system;
selecting, by a computer processor, one or more of the online
interactions based at least in part on whether the selected online
interactions were performed by one or more of the other users
with whom the user has established a connection in the social
networking system;
1 Appellants identify Facebook, Inc. as the real party in interest. (See App.
Br. 2.)
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Appeal 2016-008277
Application 13/289,973
determining a significance score for the selected online
interactions;
responsive to determining that the selected online interactions
are performed by any user of the set of one or more other users
with whom the user has established a connection in the social
networking system, generating a report reporting information
describing the one or more of the selected online interactions to
the user, the generating based on the significance scores
determined for the selected online interactions; and
providing the report to the user using one or more
communication channels of the social networking system.
THE REJECTIONS
1. Claims 1—5, 8—17, and 24—31 stand rejected under 35 U.S.C.
§101 “because the claimed invention is directed to non-statutory subject
matter.” (See Final Act. 2; Ans. 2-4.)
2. Claims 1—5, 8—17, and 24—31 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Higgins et al. (US 2010/0332304 Al; pub.
Dec. 30, 2010), Ransom et al. (US 2010/0228617 Al; pub. Sept. 9, 2010),
and Hillerbrand (US 2010/0257028 Al; pub. Oct. 7, 2010). (See Final Act
3-12.)
ANALYSIS
Section 101
To determine whether a patent claims ineligible subject matter, we
apply the two-step test introduced in Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66 (2012), and further explained in Alice
Corp. Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347 (2014). We first
determine whether the claims at issue are directed to an abstract idea. Alice,
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Application 13/289,973
134 S. Ct. at 2355. If we find an abstract idea, we search for something
“significantly more” by “examin[ing] the elements of the claim to determine
whether it contains an ‘inventive concept’ sufficient to ‘transform’ the
claimed abstract idea into a patent-eligible application.” Id. at 2354, 2357
(quoting Mayo, 566 U.S. at 73, 79). This “inventive concept” must go
beyond “well-understood, routine, conventional activity.” Mayo, 566 U.S. at
79.
Regarding the first step, we agree with the Examiner that the instant
claims are directed to an abstract idea, namely “the concept of following
deals in a social network.” (Final Act. 2.) The abstract idea is implemented
in claim 1 as a series of data manipulation steps, including “accessing”
information regarding other users, receiving a request for information
regarding a deal, receiving information about the deal, selecting and ranking
some of that information, and providing selected information in a report.
These steps, taken together, describe a formulaic manipulation of data that
we find insufficient to make the claim, when considered as a whole, non­
abstract under governing law. See, e.g., Electric Power Grp., LLC v. Alstom
S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (rejecting claims where “[t]he
advance they purport to make is a process of gathering and analyzing
information of a specified content, then displaying the results, and not any
particular assertedly inventive technology for performing those functions”);
Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306 (Fed. Cir. 2015)
(arranging, sorting, and eliminating data to determine prices);
eResearchTechnology, Inc. v. GRF, Inc., 186 F. Supp. 3d 463 (W.D. Pa.
2016) (obtaining data, applying and analyzing the data to derive a threshold,
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Application 13/289,973
obtaining new data, comparing the new data to the threshold), aff’d, 2017
WL 1033672 (Fed. Cir. Mar. 17, 2017).
Regarding the second step, we also agree with the Examiner that the
claims do not include anything “significantly more” that might transform the
idea from abstract to patent-eligible. Appellants’ argument that the claims
are not merely directed to an abstract idea due to the presence of “social
networking system-specific information, such as information about social
connections of users on the social networking system and (further) of the
interactions that those social connections have had with the deal while using
the social networking system, and of the significance of those interactions”
(App. Br. 11) is not persuasive. The fact that the information being
manipulated is social network information is, standing alone, insufficient to
give rise to an inventive concept.
We also do not agree with Appellants that “the claims of this
application are analogous to the claims at issue in the DDR Holdings case.”
(App. Br. 13.) The claims in DDR were directed to a virtual store within a
virtual store concept that had no brick and motor analogue and was
determined to be a fundamentally new way to operate in the Internet
environment. See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,
1257 (Fed. Cir. 2014). Appellants’ claims, on the other hand, simply
provide a specific type of information to a social media user. Although it
may be a new idea to provide that particular type of information, it is not a
fundamentally new or different way to use the Internet or computers.
Because we are unpersuaded by Appellants’ arguments, we sustain the
Section 101 rejection of claims 1—5, 8—17, and 24—31.
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Section 103
The Examiner finds that Higgins teaches most of the limitations of
independent claims 1 and 26, but that
Higgins does not disclose accessing for a user of a social
networking system a set of one or more other users with whom
the user has established a connection in the social networking
system; the online interactions performed by the users using a
user interface of the social networking system; determining a
significance score for the selected online interactions, the
generating based on the significance scores determined for the
selected online interactions.
(Final Act. 3—4, emphasis omitted.) The Examiner further finds that (a)
“Ransom teaches accessing for a user of a social networking system a set of
one or more other users with whom the user has established a connection in
the social networking system”; and (b) Hillerbrand teaches “the online
interactions performed by the users using a user interface of the social
networking system,” “determining a significance score for the selected
online interactions (model of latent social networks),” and “the generating
based on the significance scores determined for the selected online
interactions.” (Id. at 4—5, emphasis omitted.)
Appellants argue Hillerbrand does not teach or suggest “determining a
significance score for the selected online interactions.” (App. Br. 16.) The
Examiner responds that Higgins provides such teachings in paragraphs 110
and 116, even though the Examiner in the Final Action found Higgins did
not teach determining a significance score for the selected online
interactions. We conclude the Examiner was correct in the first instance,
and that although Higgins does teach a “score,” it does not teach or suggest
the claimed score.
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Application 13/289,973
Paragraphs 110 and 116 of Higgins describe how an advertiser may
want to evaluate an offer’s predicted performance, in which case the system
carries out a “confidence evaluation” using historical and other data to
determine a “confidence score,” which is an assessment of how well the
system will be able to track whether or not a user has satisfied an offer. We
do not agree with the Examiner that this disclose of a score measuring a
system’s ability to track completion of future tasks of a certain type teaches
or suggests the claimed “significance score for the selected online
interactions” of other users with whom the user has established a connection
in the social networking system.
Because we agree with Appellants’ argument, we do not sustain the
Section 103 rejection of claims 1—5, 8—17, and 24—31. Because this issue is
dispositive, we do not reach Appellants’ other prior art arguments.
DECISION
The rejection of claims 1—5, 8—17, and 24—31 under Section 101 is
affirmed. The rejection of claims 1—5, 8—17, and 24—31 under Section 103 is
reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED2
2 Because we affirm at least one ground of rejection with respect to each
claim on appeal, the Examiner’s decision rejecting claims 1—5, 8—17, and
24—31 is affirmed. See 37 C.F.R. § 41.50(a)(1).
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